Loyola of Los Angeles Loyola of Los Angeles

Entertainment Law Review Entertainment Law Review

Volume 5 Number 1 Article 9

1-1-1985

Music Music

Linda Kimbell

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Recommended Citation Recommended Citation Linda Kimbell, Music, 5 Loy. L.A. Ent. L. Rev. 245 (1985). Available at: https://digitalcommons.lmu.edu/elr/vol5/iss1/9

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V. Music

A. Copyright

1. Copyright Infringement: Temporal Remoteness Is No Defense

ABKCO Music, Inc. v. Harrisongs Music, Ltd. 1 is the fourth roundof litigation involving claims of copyright infringement against GeorgeHarrison, formerly of the Beatles. The first round began in 1971, whenBright Tunes Music Corporation brought an action against Harrisonclaiming that his song, "My Sweet Lord" infringed upon its copyright inthe song "He's So Fine" by Ronald Mack. The case went to trial in1976.2

In order to prevail in a copyright infringement action, the plaintiffmust prove the defendant copied the protected work.3 Since the plaintiffrarely has direct evidence of copying, the courts allow proof by circum-stantial evidence. Two methods are permissible: (1) evidence that thedefendant's work is substantially similar to the plaintiff's; and (2) evi-dence of the defendant's access to the plaintiff's work.4 These two typesof circumstantial evidence give rise to an inference of copying.5

Substantial similarity6 can be proven by either of two methods: ex-

1. 722 F.2d 988 (2d Cir. 1983).2. Bright Tunes Music Corp. v. Harrisongs Music, Ltd., 420 F. Supp. 177 (S.D.N.Y.

1976). The district court found that Harrison had infringed the copyright of "He's So Fine"and set a trial date on the issue of damages. In 1973, a second action was brought in Englandby The Peter Maurice Music Co. which had the worldwide rights, with the exceptions of theUnited States and Canada, to "He's So Fine." The parties reached a settlement in this actionin 1977. Damages were assessed in ABKCO Music, Inc. v. Harrisongs Music, Ltd., 508 F.Supp. 798 (S.D.N.Y. 1981). By the time of the damages trial, Allen B. Klein, the Beatles'former manager and president of ABKCO, had purchased Bright Tunes' copyright in "He's SoFine" and its rights in the litigation. Harrison asserted affirmative defenses and counterclaimsfor breach of fiduciary duty and requested ABKCO's disqualification from recovering dam-ages. The district judge awarded damages of $587,000 to ABKCO, the amount Klein had paidfor Bright Tunes' assets, to be held in a constructive trust in Harrison's favor and to be trans-ferred to him upon payment of the amount of damages. In ABKCO Music, ABKCO appealedthe decision on breach of fiduciary duty and Harrison cross-appealed on the liability issue.

3. Arnstein v. Porter, 154 F.2d 464, 468 (2d Cir. 1946) (defendant's summary judgmentin copyright infringement action modified in part and reversed in part on, among others,grounds that trial is appropriate in plagiarism suit).

4. Id.5. Id.6. The amount of similarity that constitutes substantial similarity eludes quantification.

The similarity must involve the expression of ideas and not the ideas themselves. Nichols v.Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930), cert. denied, 282 U.S. 902 (1931)(suit by author of "Abie's Irish Rose" claiming infringement by defendant's movie "The Co-hens and The Kellys;" held, no infringement); Warner Bros., Inc. v. American Broadcasting

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pert testimony or the audience test.7 At the liability trial, experts testi-fied as to the unique character of the arrangement of musical motifs inthe two songs. Harrison's own expert testified that even though the indi-vidual motifs were not unusual, he had never before come across thisparticular sequence.' Stating it was obvious to the listener that the twosongs were virtually identical, the district court found there was substan-tial similarity between "He's So Fine" and "My Sweet Lord."9

Access is defined as the opportunity to copy the infringed work.10

"He's So Fine" was a popular song when it was released. It was numberone on the Billboard charts in the United States for five weeks and a top-ten hit in England for seven. This widespread dissemination, along withHarrison's testimony that he remembered hearing the song, was crucialto the court's determination that Harrison had the opportunity to copythe song and thus, had access."

The court accepted that Harrison had not consciously used thetheme from "He's So Fine" in composing his own song.12 However, lackof intentional copying was no defense.13 His action constituted copyrightinfringement however subconsciously it was done. 14

Co., 720 F.2d 231 (2d Cir. 1983) (character Ralph Hinkley in "The Greatest American Hero"held not to infringe upon the character Superman). Professor Nimmer has categorized twotypes of similarity: comprehensive non-literal similarity and fragmented literal similarity. Inthe former, the fundamental essence or structure of a work is duplicated. In the latter, aportion of the work: a line, paragraph or chapter, is copied verbatim. 3 M. NIMMER, NIM-MER ON COPYRIGHT § 13.03[A] (1983).

7. Expert testimony involves a dissection and critical analysis of the works in question todetermine whether or not they are similar. The audience test is also called the ordinary ob-server test. This test depends on the spontaneous and immediate reactions of the averagereasonable person who has read, heard or seen the works in question. 3 M. NIMMER, NIMMERON COPYRIGHT § 13.03[E] (1983). See Nichols v. Universal Pictures Corp., 45 F.2d 119 (2dCir. 1930), cert. denied, 282 U.S. 902 (1931); Sheldon v. Metro-Goldwyn Pictures Corp., 7 F.Supp. 837 (S.D.N.Y. 1934), rev'd, 81 F.2d 49 (2d Cir. 1936) (claim the movie "Letty Lynton"infringed play "Dishonored Lady;" held, no infringement); Sid & Marty Krofft TelevisionProds., Inc. v. McDonald's Corp., 562 F.2d 1157 (9th Cir. 1977) (claim of infringement bycreators of children's program "H.R. Pufnstuf' against defendant's McDonaldland televisioncommercials; held, infringement).

8. Bright Tunes, 420 F. Supp. at 180 n.ll.9. Id. Writing for the court, Judge Owen stated, "[I]t is perfectly obvious to the listener

that in musical terms, the two songs are virtually identical except for one phrase."10. 3 M. NIMMER, NIMMER ON COPYRIGHT § 13.02[A] (1983).11. Bright Tunes, 420 F. Supp. at 179.12. Id. at 180.13. Nimmer writes that, "[i]nnocent intent should no more constitute a defense in an in-

fringement action than in the case of conversion of tangible personalty." Nimmer distin-guishes three types of innocent intent, one of which is unconscious plagiarism, where theinfringer copies but, in good faith, has forgotten the source of his material. 3 M. NIMMER,

NIMMER ON COPYRIGHT § 13.08 (1983).14. Both cases relied on by the court state this proposition. In Fred Fisher, Inc. v. Dilling-

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Harrison appealed the district court decision in ABKCO Music, " ontwo grounds. First he argued that the district court had relied on inap-plicable precedent in reaching its decision. 6 "He's So Fine" was re-corded in 1962, seven years before Harrison recorded "My SweetLord". 7 Harrison contended that his case was distinguishable from bothFred Fisher, Inc. v. Dillingham"8 and Sheldon v. Metro-Goldwyn PicturesCorp., 19 wherein the infringing parties had access to the infringed workshortly before they produced their own. Harrison argued that the "tem-poral remoteness [between the opportunity to copy "He's So Fine" andthe composition of "My Sweet Lord"] preclude[d] a finding of access."20

Harrison contended that his case more closely resembled the facts inDarrell v. Joe Morris Music Co. 21 In Darrell, the court held that therewas no infringement in spite of the substantial similarity of the songs inquestion, where the compositions of the two were separated by more thanseven and one-half years.22

The Second Circuit rejected Harrison's argument, for several rea-sons. Harrison admitted that he had heard "He's So Fine" in the 1960's.Additionally, the jury could infer access from the widespread dissemina-tion of "He's So Fine."' 23 Finally, the court distinguished Darrell4 fromBright Tunes Music Corp. v. Harrisong's Music, Ltd.25 in three ways.First, the repeated themes in Darrell were trite and likely to recur spon-taneously. Second, the song had very little publicity. Third, the defend-ant had denied hearing the allegedly infringed upon song.2 6

Harrison's second ground for appeal was that a finding of infringe-ment based on subconscious copying would bring copyright law danger-

ham, 298 F. 145, 148 (S.D.N.Y. 1924), Judge Learned Hand wrote, "[It is seldom that a tort,as this is, depends upon the purpose of the wrongdoer." And in Sheldon v. Metro-GoldwynPictures Corp., 81 F.2d 49, 54 (2d Cir.), cert. denied, 298 U.S. 669 (1936), Judge Hand wrote,"[N]obody knows the origin of his inventions; memory and fancy merge even in adults. Yetunconscious plagiarism is actionable quite as much as deliberate."

15. 722 F.2d 988 (2d Cir. 1983).

16. Id. at 997.17. Bright Tunes, 420 F. Supp. at 178.18. 298 F. 145 (S.D.N.Y. 1924) (suit by composer of song "Dardanella" claiming infringe-

ment by song "Kalua" by Jerome Kern; held, infringement).19. 81 F.2d 49 (2d Cir.), cert. denied, 298 U.S. 669 (1936).

20. ABKCO Music, 722 F.2d at 988, 997.21. 113 F.2d 80 (2d Cir. 1940) (appeal by plaintiff of judgment for defendant in musical

copyright infringement action; judgment affirmed).22. Id.23. ABKCO Music, 722 F.2d at 998.24. 113 F.2d 80 (2d Cir. 1940).25. 420 F. Supp. 177 (S.D.N.Y. 1976).26. ABKCO Music, 722 F.2d at 998.

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ously close to the novelty requirement of patent law. He argued that topermit such a finding was unsound policy, particularly in a case like hiswhere access had preceded the alleged copying by several years.

The standards for determining whether a work can be copyrightedor an invention patented are not stated in the Constitutional provisionfor copyright and patent. Congress and the courts have set two differentstandards: originality for copyright and novelty for patent. 28 To obtaina patent, an inventor or discoverer must be able to prove uniqueness:that the invention or discovery has previously never been made or dis-covered. In copyright, however, the author faces a less exacting stan-dard. Originality for copyright purposes "means that the particularwork 'owes its origin' to the 'author.' "29 Thus, it is possible for an au-thor to produce a work identical to another without infringing if the au-thor can prove originality.3" In arguing that subconscious copyingshould not be applied to him, it is possible Harrison was thinking of thedoctrine of anticipation. This doctrine charges an inventor with con-structive knowledge of all preceding inventions.31

The court found no reason to depart from the Second Circuit's posi-tion that copyright infringement can be subconscious and, consequently,rejected Harrison's argument. The court was primarily concerned withthe problems a copyright owner would have in proving that a defendantdeliberately copied a work. The court expressed its fear that allowingsubconscious copying as a defense would greatly undermine the protec-tions given to authors by the Copyright Act.32 The court of appeals af-firmed the finding of copyright infringement.

Subconscious copying as a defense to copyright infringement has acertain surface appeal. Given the pervasive influence of all types of com-munications media, any individual might be hard pressed to say whethera particular inspiration was original or not. However, this defense is notneeded to protect the innocent defendant.

Since a plaintiff must demonstrate both substantial similarity andaccess in order to prove copying, evidence of one without the other will

27. Id. at 997.28. Alfred Bell & Co., Ltd. v. Catalda Fine Arts, Inc., 191 F.2d 99, 101 (2d Cir. 1951)

(action for infringement of plaintiffs' copyrights in mezzotints of old masters; judgment forplaintiffs affirmed).

29. Id. at 102.30. Id. at 103.31. Id.32. ABKCO Music, 722 F.2d at 998. The Copyright Act gives the owner of a copyright

the exclusive rights to reproduce, prepare derivative works, distribute, and publicly performand display the copyrighted work. 17 U.S.C. § 106 (1976).

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generally not be sufficient. Even though Harrison's song was nearlyidentical to "He's So Fine," he might not have been found liable if thecircumstantial showing of access had not been so strong. Courts havehad no difficulty in finding that even extremely similar works were inde-pendently created when there is little or no proof of access. 3

Moreover, in cases of musical copyright infringement, the courtshave long recognized that the number of pleasing combinations of musi-cal notes is limited and that repetition is bound to occur.34 In Harrison'scase, since the individual musical motifs were found by experts to becommon, liability might have been precluded if Harrison had used onlythe motifs and not their unique sequence.

Finally, similarity that is less than substantial will not result in lia-bility even where proof of access is great.3a In Harrison's case, the simi-larity of a phrase or two, even if uncommon, might not have beenconsidered substantial enough for the court to find that a copying hadoccurred.

Some might argue that there must be a point when sufficient timehas elapsed between a first work and a subsequent infringing work so thattemporal remoteness and subconscious copying can excuse a defendantfrom liability. The purpose of the copyright laws, however, is to protectthe property interests of the author. 36 Those interests are no less injuredby one who saw or heard the infringed work so long ago that all recollec-tion had vanished than by one who knowingly borrows. As long as theplaintiff can show proof of access and substantial similarity, even the un-intentional copier will be held liable for the infringement.

Linda Kimbell

33. 3 M. NIMMER, NIMMER ON COPYRIGHT § 13.02[B] (1983). Such would be the casewhen the defendant presented sufficient proof of no access and the plaintiff could not provethat the defendant's work was not independently created. See Selle v. Gibbs, 567 F. Supp.1173 (N.D. Ill. 1983).

34. Darrell v. Joe Morris Music Co., 113 F.2d 80 (2d Cir. 1940). The court stated that"such simple trite themes as these are likely to recur spontaneously .... [Wihile there are anenormous number of possible permutations of the musical notes of the scale, only a few arepleasing ...."

35. 3 M. NIMMER, NIMMER ON COPYRIGHT § 13.02[D] (1983).36. Fred Fisher, Inc. v. Dillingham, 298 F. 145, 148 (S.D.N.Y. 1924) ("The author's copy-

right is an absolute right to prevent others from copying his original collocation of words ornotes, and does not depend upon the infringer's good faith. Once it appears that another has infact used the copyright as the source of his production, he had invaded the author's rights").

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B. Contract

1. Enforcement Of Personal Service Contracts In California: The$6,000 Minimum Compensation Requirement-Teena Marie

Has Motown Singing The Blues

You have to pay the piper if you want to hear the song. Accordingto the California Court of Appeal you also have to pay the piper if youwant to prevent him from playing the song for anyone else. In MotownRecord Corporation v. Brockert,' ("Teena Marie"), the court held that aprovision in a personal services contract giving the employer the optionto pay the employee the statutory minimum compensation of $6,000 didnot satisfy the California injunction statute.2 Consequently, injunctiverelief will not be available unless the contract guarantees the employee atleast $6,000 annually from the commencement of the contract term.3

Furthermore, an option to provide this compensation by the employer atan uncertain date in the future will not avail the employer of injunctiverelief against the employee.4 While the employee may be liable for dam-ages for breach of contract, he cannot be enjoined from providing hisservices to another employer without a guarantee at the rate of $6,000minimum compensation annually.5

The promotion of recording artists by a record company is a costlyand risky venture. The average cost of producing and promoting a newalbum is between $350,000 to $500,000.6 Of the 4000 albums releasedeach year, only twenty to thirty percent manage to break even.7 Often arecording artist will not begin to develop a following until after severalalbums are released. The use of injunctive relief is generally the onlyeffective method available to a record company to protect its investment

1. 160 Cal. App. 3d 123, 207 Cal. Rptr. 574 (1984) (hereinafter cited as Teena Marie).2. CAL. CIV. CODE § 3423 (West 1970) provides: An injunction cannot be granted:...5. To prevent the breach of a contract, other than a contract in writing for therendition of personal services from one to another where the minimum compensationfor such service is at a rate of not less than six thousand dollars per annum and wherethe promised service is of a special, unique, unusual, extraordinary or intellectualcharacter, which gives it peculiar value, the loss of which cannot be reasonably oradequately compensated in damages in an action at law, the performance of whichwould not be specifically enforced ....

The identical provision appears at CAL. CIV. PROC. CODE § 526(5) (West 1979).3. Teena Marie, 160 Cal. App. 3d at 132, 207 Cal. Rptr. at 580.4. Id. at 135, 207 Cal. Rptr. at 582.5. Id. at 138, 207 Cal. Rptr. at 584.6. See Wallace, Warner Bros May Issue Fewer Albums, Rolling Stone Magazine, March

8, 1979, at 10, col. 3.7. S. CHAPPLE & R. GAROFALO, ROCK 'N' ROLL Is HERE TO PAY 174 (1977).

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in a recording artist. 8 Damages, particularly in the form of lost profits,however, may not be available due to the speculative nature of recordsales projections, especially if the artist has no proven track record ofsales performance. As a result, record companies that are able to do soare careful to comply with the injunction statute and provide their artistswith the statutory minimum compensation.

Some record companies have attempted to minimize the additionalexpense of providing the $6,000 compensation by using an option provi-sion allowing this payment to occur at a later point in time. 9 In practice,the record company exercises its option to make the payments when itseeks a prohibitory injunction against the artist who is seeking to breachthe contract by performing for another record company.'° Many practi-tioners and commentators have expressed concern over the validity ofusing an option clause to provide the statutory minimum compensa-tion." Their doubts were confirmed in Teena Marie.

In April, 1976, Teena Marie Brockert (professionally known as"Teena Marie") entered into separate contracts with Motown RecordCorporation ("Motown"), as a recording artist and Jobete Music Com-pany ("Jobete") as a songwriter. 2 Motown and Jobete are affiliatedcompanies engaged in record production and music publishing respec-tively. 3 Teena Marie was virtually unknown in the music business at this

8. See Light, The California Injunction Statute and the Music Industry: What Price In-junctive Relief?, 7 CoL. J. OF ART AND THE LAW 141, 154 (1982) (hereinafter cited as TheCalifornia Injunction Statute).

9. A typical option provision might read:In the event that company has not paid to artist compensation of at least $6,000 orsuch other sum as may be required by law in order for company to be entitled toequitable relief against artist, on or before December 31 of any calendar year duringthe term of this agreement, then company shall have the option to pay to artist thedifference between the compensation that may be required by law to entitle companyto equitable relief and the amount theretofore said to artist by company during suchcalendar year.

Id. at 165 n.116.10. Id. at 165. After the company exercises the compensation option, the artist may not in

fact receive payment. The company may assert that, since the artist is in breach of the con-tract, payment is not required until the artist is once again ready, willing and able to perform.Note, Statutory Minimum Compensation and the Granting of Injunction Relief to Enforce Per-sonal Service Contracts in the Entertainment Industries: The Need for Legislative Reform, 52 S.CAL. L. REV. 489, 508 (hereinafter cited as Statutory Minimum Compensation).

11. See, e.g., Schlesinger, Six Thousand Dollars Per Year, 2 J. BEV. HILLS B.A. 25, 29-30(1968); Statutory Minimum Compensation, supra note 10 at 514-19; The California InjunctionStatute at 165-66.

12. Teena Marie, 160 Cal. App. 3d at 126, 207 Cal. Rptr. at 576.13. Id. at 134, 207 Cal. Rptr. at 581.

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stage in her career. 4 She later developed into a successful and profitablerecording artist for Motown.' 5

The contracts between Teena Marie, Motown and Jobete providedfor an initial term of one year and granted the companies six options torenew the contracts for one year periods on the same terms applicable tothe initial period.16 Each contract contained an exclusivity clausewherein, during the term of the contract, and any option renewal peri-ods, Teena Marie agreed not to perform similar services of recording orsongwriting for another employer. The contracts further provided eachcompany with the option, exercisable at any time, to pay Teena Marie"compensation at the rate of not less than $6,000 per annum." The com-panies' obvious intent was to comply with the injunction statute in theevent Teena Marie sought to breach the exclusivity clause of thecontracts.

In May, 1982, during the sixth and last option period of the twocontracts, Teena Marie informed Motown and Jobete she would nolonger perform under the contracts and gave a written notice of recision.In August, 1982, Motown and Jobete sued Teena Marie for breach ofcontract and for injunctive and declaratory relief. In September, 1982,the companies exercised their option to pay Teena Marie at the rate of$6,000 per year to invoke the statutory injunction and prevent her fromperforming for another recording or publishing company. In November,1982, Teena Marie informed Motown and Jobete that she had signed arecording contract with another company and would commence per-forming for that company within the month. 7

Motown and Jobete were granted a preliminary injunction basedupon the exclusivity clauses of the contracts. The injunction issued bythe trial court restrained Teena Marie from performing as a singer orsongwriter for anyone other than Motown or Jobete until April 9, 1983,the purported expiration date of her contracts with the companies.' 8

Teena Marie appealed the issuance of the injunction to the CaliforniaCourt of Appeals.

The court addressed the history of the minimum compensation re-quirement as treated by the California Legislature and courts. The court

14. Id. at 126-27, 207 Cal. Rptr. at 576. Teena Marie's experience consisted of singingwith local bands at weddings, parties, shopping centers and performing in school musicals.

15. Id. at 128, 207 Cal. Rptr. at 576. Teena Marie's album "It Must Be Magic" achieved

gold record status after selling more than 400,000 copies. Motown's net profit from this albumwas allegedly $1.7 million. Id. at 132 n.4, 207 Cal. Rptr. at 580 n.4.

16. Id. at 127, 207 Cal. Rptr. at 576.17. Id.18. Id.

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noted that the long standing principal of equity denying that the specificenforcement of a personal services contract.' 9 An exception to this prin-cipal is found in the English case of Lumley v. Wagner.20 Where an em-ployee covenants both to perform for the employer and not to performelsewhere, the Lumley doctrine authorizes the injunction of a breach ofthe negative covenant not to perform elsewhere. Notwithstanding this,the court cannot specifically enforce the affirmative covenant to performfor the employer. 2

California Civil Code Section 3423, as originally adopted in 1872,did not include a Lumley exception to the rule prohibiting specific per-formance of personal service contracts.2 2 In 1919, the original statutewas amended to its present form, incorporating a limited version ofLumley.23 However, California courts have interpreted the minimumcompensation requirement of the statute only twice since its enactment in

19. Id. at 129, 207 Cal. Rptr. at 578 (citing Poultry Producers v. Barlow, 189 Cal. 278, 288(1922)); See generally Note, Equity-Negative Covenants in Contracts for Personal Services, 10 S.CAL. L. REV. 347 (1937).

20. 42 Eng. Rep. 687 (1852) (opera singer Johanna Wagner enjoined from performing forLumley's competitor pursuant to exclusivity clause in her contract).

21. For a detailed discussion of the Lumley doctrine, see Tannenbaum, Enforcement ofPersonal Service Contracts in the Entertainment Industry, 42 CAL. L. REV. 18, 19-20 (1954);The California Injunction Statute, supra note 8, at 143-45.

22. Section 3423, as originally enacted, provided "an injunction cannot be granted . . .(fifth) to prevent the breach of a contract, the performance of which would not be specificallyenforced." CAL. CIV. CODE § 3423 (1872) (amended 1919).

23. As originally introduced, the bill required only that the personal services contract byin writing. J. of the Sen., Forty-third Sess., p. 534 (1919). The stipulation was then addedrequiring the minimum compensation for such personal services to be at the rate of not lessthan $6,000 per annum. Id. at 1255. A further amendment required the promised service tobe of a special, unique, or intellectual character. Id. at 1349.

The Teena Marie court apparently extends this latter requirement to allow injunctive re-lief only when the performer sought to be enjoined posseses "star quality" status or is a personof distinction in his field at the time of entering the contract. The court asserts that the Cali-fornia Legislature in 1919 intended to incorporate the policies of Lumley v. Wagner into theinjunction statute where the services provided were from an exceptional artist and for a consid-erable sum of money. Teena Marie, 160 Cal. App. 3d at 136-37, 207 Cal. Rptr. at 383. Thecourt also notes that the $6,000 figure used in the statute represented five times the averagenational wage in 1919. This serves as an indication, according to the court, that the Legisla-ture did not intend to allow injunctive relief against a performer unless he had alreadyachieved distinction prior to entering the contract. Id. at 138, 207 Cal. Rptr. at 584. The courtstates that this requisite distinction should be measured by the compensation the employer iswilling to pay the performer. The court does not provide any guidance as to what level ofcompensation is required to allow injunctive relief for the employer or whether the compensa-tion is to be measured based upon royalty rates, guaranteed advances or a combination of thetwo. Arguably, under the court's analysis, the company could turn an unknown artist into a"star quality" performer without the public ever knowing about it as long as substantial com-pensation was paid to the performer when the contract was entered.

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Foxx v. Williams24 and MCA Records Inc. v. Newton-John.2In Foxx, comedian Red Foxx brought suit against a record company

distributing his albums, requesting an accounting and declaratory re-lief.26 The record company cross-complained seeking an injunctionagainst Foxx to prevent him from breaching the exclusivity clause of hiscontract and making recordings for another record company. Under theterms of the contract, Foxx was to receive a royalty of three percent ofthe list price for each recording sold. The California Court of Appealsheld that Foxx could not be enjoined since the statutory minimum com-pensation requirement was not met due to the contingent nature ofFoxx's income under the royalty contract.27 Noting that the injunctionstatute would not be satisfied even if the actual royalties earned by Foxxexceeded the rate of $6,000 per year, the court explained, "[T]he Legisla-ture has concluded that an artist who is not entitled to receive a mini-mum of $6,000 per year by performing his contract should not besubjected to this kind of economic coercion. Under the statutoryscheme, an artist who is enjoined from accepting new employment will atleast have the alternative of earning $6,000 or more per year by perform-ing his old contract. ' 28 The language in Foxx has been generally inter-preted as requiring the personal services contract to guarantee aminimum of $6,000 per year in order to satisfy the injunction statute.29

In MCA v. Newton-John, recording artist Olivia Newton-John chal-lenged a preliminary injunction restraining her from recording for anycompany other than MCA Records.3" Under the terms of her contract,Newton-John received royalties based on record sales in addition to sub-stantial non-refundable advances.31 Newton-John had agreed to pay forall production costs related to delivering the finished albums to MCARecords from the advanced monies received. The contract provided thatshe had exclusive control of production costs in producing each of thealbums.

Newton-John argued that the contract failed to meet the statutory

24. 244 Cal. App. 2d 223, 52 Cal. Rptr. 896 (1966).25. 90 Cal. App. 3d 18, 153 Cal. Rptr. 153 (1979).26. Foxx, 244 Cal. App. 2d at 227, 52 Cal. Rptr. at 898.27. Id. at 236, 52 Cal. Rptr. at 904.28. Id.29. See The California Injunction Statute, supra note 8, at 149.30. Newton-John, 90 Cal. App. 3d at 21, 153 Cal. Rptr. at 154.31. Id. Newton-John was obligated to deliver two albums per year for an initial period of

two years, and, at MCA's option, two albums per year for three additional periods of one yeareach. In return, MCA would provide a nonreturnable advance of $250,000 for each recordingdelivered during the initial two years, and an advance of $100,000 for each recording deliveredduring the option renewal years.

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minimum compensation requirement because her net compensation wasless than $6,000 annually once production costs were subtracted fromher guaranteed advance.32 The court rejected this argument, reasoningthat since Newton-John retained exclusive control of the productioncosts, she ultimately controlled the net margin remaining at the comple-tion of the albums.33 The court found that the guaranteed non-returna-ble advance met the statutory requirements of minimum compensationdespite the fact that some or all of the advance was used for productioncosts.

3 4

Against this judicial and statutory backdrop, the Teena Marie courtexamined whether the option clause providing the $6,000 minimum com-pensation in the Motown and Jobete contracts satisfied the injunctionstatute. In order to require specific enforcement, the contract must havea compensation provision that provides a minimum of $6,000 per year.The court explained that "agreeing to payment of the minimum compen-sation is not a condition precedent to the granting of injunctive relief; it isa threshold requirement for admission of the contract into the class ofcontracts subject to injunctive relief under the statute. '35 Under the op-tion clause in Teena Marie's contract she "has merely the potential ofearning $6,000 a year; there is no guarantee this compensation will everbe paid." The court concluded that the option clause in Teena Marie'scontract was analogous to the contingent payment of royalties rejected inFoxx. The use of the option clause was "nothing more than a new ar-rangement of an old song. "36

The court also held that the option provision for providing the mini-mum compensation violated the concept of fundamental fairness embod-ied in the statute.37 The court explained:

If we were to hold the option clause satisfies section 3423, wewould nullify the $6,000 compensation requirement as a coun-terweight on the employer. Whereas the $6,000 compensationrequirement was intended to balance the equities [between theemployer and employee], the $6,000 option clause is intended

32. Id. at 122, 153 Cal. Rptr. at 154.33. Id. The court noted that Newton-John's interpretation of the minimum compensation

statutes would allow her to nullify her contract at any time merely by increasing her produc-tion expenses.

34. Id. The Teena Marie court indicated that it may have decided the Newton-John casedifferently. In the court's opinion, the minimum compensation requirement requires at least$6,000 be available to the artist after deducting production costs. Teena Marie, 160 Cal. App.3d at 135 n.7, 207 Cal. Rptr. at 582 n.7.

35. Id. at 135, 207 Cal. Rptr. at 582.36. Id.37. Id. at 139, 207 Cal. Rptr. at 584.

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to allow record companies to avoid payment of minimum com-pensation while retaining the power of economic coercion overthe artist."38

[emphasis added]. Economic coercion can be accomplished in two ways,according to the Teena Marie court. First, the option clause gives therecord company the coercive power to threaten the artist with an injunc-tion without having to guarantee or pay anything to the artist.39 Second,the minimum compensation need not be paid until the artist intends tobreach the exclusivity clause by performing for another company. 4

0 Pay-ing the minimum compensation enables the record company to assertthat the contract does indeed provide the statutory minimum compensa-tion.4 The court noted that the record company's election to pay the$6,000 is then meaningless since, unless the artist is earning far in excessof that amount in royalties from record sales, the case would not beworth litigating by the record company.42

Teena Marie serves as a clear warning to record companies that any-thing less than a bona fide guarantee of compensation at a minimum an-nual rate of $6,000 may prevent the availability of injunctive relief whenthe artist seeks to perform for another record company.43 The impact ofthe case will likely be treated by the record companies as another cost ofdoing business. If the company views the artist as a valuable asset capa-ble of generating large record sales, they should draft their agreements toguarantee $6,000 per year so that injunctive relief will be available. Thispayment will act as an insurance premium to prevent the loss of the art-ist's exclusive services.' If the artist is generating large record sales, this

38. Id., 207 Cal. Rptr. at 585.39. Id. The mere threat of enjoining the artist may force a settlement of the dispute be-

tween the parties. Most artists' careers cannot afford to be dropped from the public view forvery long without losing commercial popularity. See Statutory Minimum Compensation, supranote 10 at 491-492.

40. Teena Marie, 160 Cal. App. 3d at 139-40, 207 Cal. Rptr. at 585. See supra note 10 andaccompanying text.

41. 160 Cal. App. 3d at 140; 207 Cal. Rptr. at 585.42. Id.43. Although the option clause route may not result in injunctive relief, there may be other

means by which a record company can minimize or avoid the statute's impact. The recordcompany may use choice of law and forum selection clauses to avoid having California lawapply. The company may also guarantee the statutory minimum compensation only to the keymembers or creative forces behind a group. The contract may also be "back-end" loaded,authorizing the $6,000 compensation to be paid at the end of each contract year. In effect, theartist's yearly record sales will ideally provide the payment. See generally, Statutory MinimumCompensation, supra note 10 at 514-20; The California Injunction Statute, supra note 8, at 158-66.

44. If the injunction is granted against the artist, the most likely result will be a negotiationbetween the artist's old and new employer. Since the record company's primary interest is in

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premium may turn out to be quite a bargain. But the realities of therecord industry are that the majority of albums released by record com-panies fail to show a profit. This bleak statistic undoubtedly was a factorin record companies developing the option provisions for minimum com-pensation in an attempt to limit the throwing of good money after bad.

The effect of the present case may result in fewer marginally suc-cessful or struggling artists being retained on the record label's roster inorder to avoid the additional expense of $6,000 per artist. Without thepower to prevent the artist from "jumping labels" via the injunction stat-ute, it is doubtful that the record companies will expend the resourcesnecessary to nurture the developing recording artist.

Perhaps the biggest impact of Teena Marie will be on these develop-ing artists. While the holding of the case is a victory for the artist, thenet effect may result in fewer recording artists finding themselves withcontracts. Record companies may well forego the additional expense ofguaranteeing the statutory minimum compensation to the "unknown art-ist" who will not likely show a return on the initial investment until someyears later. Since the emergence of new talent is the lifeblood of the en-tertainment industry, hopefully, the result in Teena Marie will not im-pede its flow.

David N. Woolson

making money, not in stopping the artist from recording, it will often release the artist inreturn for a financial settlement from the new employer. See Rubin, The Enforcement of Per-sonal Service Contracts, 3 THE ENTERTAINMENT AND THE SPORTs LAWYER, 3, 7, n.14(1984).

1985] music

C. Attorney-Client Relationship

1. Conflict Of Interest And Attorney Disqualification In TheEntertainment Law Field

The preservation of a client's secrets and confidences can be as im-portant to the client as winning the lawsuit.' The possibility of disclo-sure of confidences to another party can be a basis for attorneydisqualification because of the conflict of interest involved. However, thecourt in C.A.M. v. E.B. Marks Music, Inc.2 held that the evidence ofconflict of interest was insufficient for disqualification.

Plaintiff, C.A.M., sought declaratory judgment and an injunctionagainst defendant, E.B. Marks Music, Inc., ("Marks") from assertingany claim to the lyric rights of a song entitled "More," a song written fora soundtrack to the motion picture "Mondo Cane." 3 C.A.M. claimed toown the musical rights to the soundtrack and lyrics.4

C.A.M. moved the court for an order directing that the attorneys ofthe law firm of Abeles, Clark and Osterberg, who represented Marks bedisqualified from any participation in the case.5 The motion was basedon conflict of interest arising out of the firm's prior representation ofC.A.M. The prior representation involved an earlier suit brought byC.A.M. against Jack Paar for the unauthorized use of the soundtrack for"Mondo Cane." 6 Paar filed a complaint against a third party who inturn filed a fourth party complaint against Marks. Both C.A.M. andMarks were represented by Abeles, Clark and Osterberg.7

C.A.M. claimed that the Abeles firm's representation of Marksagainst C.A.M. would violate Canon 4 of the ABA Code of ProfessionalResponsibility by undermining C.A.M.'s security that its secrets wouldnot be disclosed.' Marks claimed that C.A.M.'s attorneys, Feinman andKrasilovsky, were similarly subject to disqualification because Feinman

1. Aronson, Conflict of Interest, 52 WASH. L. REv. 807, 812 (1977). Aronson continues,"an attorney representing a party in a proceeding against a former client will be deemed tohave a conflict of interest if he makes use of confidential information obtained from the formerclient." Id. at 812.

2. 558 F. Supp. 57 (S.D.N.Y. 1983).3. Id. at 58.4. Id.5. Id.6. Id.7. Id.8. Canon 4 states simply: "A lawyer should preserve the confidences and secrets of a

client." MODEL CODE OF PROFESSIONAL RESPONSIBILITY Canon 4 (1980).

and Krasilovsky had represented both parites in an earlier suit.9

The court applied the rule that the successive representation of cli-ents with adverse interest will only lead to disqualification where the cur-rent representation is substantially related to the former representation.'oProof of a substantial relationship requires that the moving party showthat the relationship is patently clear, or that the issues involved in thetwo representations were identical or essentially the same." However,before the substantial relationship test can be employed, the movingparty must demonstrate that the attorney was in a position where hecould have received information which his former client might reason-ably have assumed the attorney would withhold from the presentclient.12

The court drew an analogy to Allegart v. Perot3 and concluded thatany secret revealed by C.A.M. to their attorneys during the joint repre-sentation would have necessarily been revealed to Marks.' 4 Thus, thelater representation of Marks against the interests of the former joint cli-ent could not cause disclosure of any secrets because there was no expec-tation that information would be concealed from Marks.' 5 The court,therefore, denied the motion to disqualify Mark's attorney.' 6

Even if there had been a possibility of disclosure of secrets, the resultof the case would be the same. The court noted in dictum that the issuesin the present case were not identical or essentially the same as thoseinvolved in the 1970 action brought against Jack Paar. Thus, the twocases were distinguishable.' 7 The action brought against Paar involved adispute over the ownership of the soundtrack, while the present case in-

9. C.A.M. 558 F. Supp. at 58-59 (citing Ortolani v. C.A.M. (N.Y. Sup. Ct., County ofN.Y., Summons dated September 25, 1974)). The action was brought against both C.A.M.and Marks and was settled shortly after issue was joined.

10. C.A.M. 558 F. Supp. at 59.11. Id.12. Id.The possible harshness of this rule is mitigated by the "peripheral representation"standard developed by the Second Circuit, under which an attorney previously asso-ciated with a firm that handled matters substantially related to those in which theattorney's disqualification is sought, may show that he or she had no personal in-volvement in such substantially related matters and did not actually receive any con-fidential information relevant to the matter in which disqualification is sought.

Trone v. Smith, 621 F.2d 994, 998 n.3 (9th Cir. 1980).13. 565 F.2d 246 (2d Cir. 1977) (holding that there were no grounds for disqualification

because any secret revealed by the complaining party would necessarily have been revealed tothe primary client).

14. C.A.M. 558 F. Supp. at 59.15. Id.16. Id.17. Id.

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volved rights to the lyrics of a particular song. 18 Furthermore, C.A.M.'sattorney had stated that the present action was purely contractual be-tween the two parties, C.A.M. and Marks.19 The court emphasized thatthe 1970 action did not involve contracts between the same parties.20

The Ninth Circuit, in contrast to the C.A.M. case, relying on SecondCircuit law, appears to be more protective of confidential communica-tions between attorneys and clients. While the Ninth Circuit also appliesthe substantial relationship test,21 one opinion has noted that, "if there isa reasonable probability that confidences were disclosed which could beused against the client in later, adverse representation, a substantial rela-tion between the two cases is presumed."22 Contrary to the Second Cir-cuit,23 the Ninth Circuit has stated that, "[it matters not whetherconfidences were in fact imparted to the lawyer by the client . . . [t]hatinquiry would be improper as requiring the very disclosure the rule isintended to protect."24 Thus, the Ninth Circuit and Second Circuit,whose jurisdictions include the two largest entertainment capitals (LosAngeles and New York), differ in their protection of confidential commu-nications in that the Ninth Circuit focuses solely on the possibility of dis-closure, while the Second Circuit considers additionally whether lack ofactual disclosure mitigated any possible harm.

The difference in scope of the substantial relationship test betweenjurisdictions could have considerable effect on entertainment lawyers.The entertainment field is more narrow than the more traditional areas oflaw, and the possibility of an attorney having represented the same clientin a later adverse action is greater. This factor raises important policyconsiderations regarding conflict of interest. On the one hand there isthe need for flexibility. A number of policy considerations involved invicarious disqualification cases25 are relevant to the entertainment field.They include the value to the client of the knowledge and expertisegained from a longstanding relationship of attorney and client, the accel-

18. Id.19. Id.20. Id.21. Trone v. Smith, 621 F.2d 994, 998 (9th Cir. 1980).22. Id.23. See supra note 12.24. Trone, 621 F.2d at 999.25. The grounds for vicarious disqualification are set out in Disciplinary Rule 5-105(D)

which provides:If a lawyer is required to decline employment or to withdraw from employmentunder a Disciplinary Rule, no partner or associate, or any other lawyer affiliated withhim or his firm, may accept or continue such employment.

MODEL CODE OF PROFESSIONAL RESPONSIBILITY DR 5-105(D) (1980).

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erated tendency toward specialization in the bar, and the resulting limita-tion on the number of firms with the necessary expertise in highlycomplex areas of law.2 6

Perhaps these considerations should be given greater weight wherethere is little possibility for access to confidential communications.27 Onthe other hand, the Ninth Circuit has stated that "[b]ecause of the sensi-tivity of client confidence and the profession's institutional need to avoideven the appearance of a breach of confidence, disqualification is requiredwhen lawyers change sides in factually related cases."2 If the legal fieldcontinues to narrow, the balancing of policy considerations will probablyplay a larger role. However, the importance of policy factors diminisheswhere the rules regarding conflict of interest are interpreted narrowly asthey were in C.A.M.

Carmin K Toscano

26. Aronson, Conflict of Interest, 52 WASH. L. REV. 807, 854 (1977).27. Aronson appears to agree with the Second Circuit's view that the possibility of access

is insufficient grounds for disqualification. However, Aronson notes:It should be emphasized, however, that none of the countervailing considerationsoutweighs clear conflicts of interest (including actual access to confidential informa-tion). . . . Instead of disqualification founded merely upon some relationship indi-cating potential access to confidences, a showing of actual access or virtual identity ofthe cases should be required. Further, law firms should be permitted to rebut anysuggestion of access. ...

Id. at 855.28. Trone, 621 F.2d at 1001.

1985]

D. Trademark

1. Trademark Infringement And The Right Of Publicity: ProtectingThe "Persona"

The right of publicity, "the right of each person to control and profitfrom the publicity values which he has created or purchased,"' continuesto emerge as a legal issue. A recent Second Circuit case, Bi-Rite Enter-prises, Inc. v. Button Master,2 illustrates the utility of asserting the rightof publicity and expands its protection to performing groups as well as toindividuals. The case also suggests that it may be wise to routinely in-clude a right of publicity claim when seeking to protect a performer'strademark.

In Bi-Rite, the plaintiffs were rock music groups and individuals:Devo, Styx, Judas Priest, Molly Hatchet, Iron Maiden, Pat Benatar andNeil Young ("the performers"); and a manufacturer and distributor ofposters, buttons, patches, bumper stickers and other novelty items, Bi-Rite Enterprises, Inc. ("Bi-Rite").3 Bi-Rite, the licensee of these andother rock artists, is authorized to merchandise the performers' names,likenesses, logos, trademarks and service marks (collectively, "marks")on Bi-Rite's novelty products.4 Bi-Rite and the performers brought suitagainst Button Master and other unlicensed sellers of novelty itemswhich bore the unauthorized marks of the performers and other rockmusic stars.5

Bi-Rite alleged trademark infringement, unfair competition, dilu-tion, and violation of rights of privacy and publicity against ButtonMaster, but was successful in its motion for summary judgment only onthe right of publicity claim.6

The term "right of publicity" was coined in 1953 by Judge JeromeFrank in Haelan Laboratories, Inc. v. Topps Chewing Gum, Inc.7 Sincethen, there has been extensive development of the right by Second Circuitcourts, usually applying New York law, although there is no clear evi-

l. Nimmer, The Right of Publicity, 19 LAW & CONTEMP. PROBS. 203, 216 (1954).2. 555 F. Supp. 1188 (S.D.N.Y.) (per Sofaer, J.), supp. op., 578 F. Supp. 59 (1983).

3. Id. at 1191.4. Id.5. Id.6. Id. at 1191-92, 1198.7. 202 F.2d 866, 868 (2d Cir.), cert. denied, 346 U.S. 816 (1953) (licensee of baseball

player, authorized to use his photograph on baseball cards, brought suit against a secondchewing gum manufacturer who the player had also licensed).

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dence that a common law right of publicity exists in New York.'The Bi-Rite court, however, did not hesitate to find that the per-

formers' publicity rights had been violated by Button Master's use oftheir marks on the novelty items.9 Although all other claims were re-jected by the court, this result illustrates the value of including a right ofpublicity claim when attempting to protect a personal mark. Notwith-standing disagreements concerning whether the right is limited to nameand likeness, some commentators, nevertheless are convinced that an as-sertion of the right is the most viable alternative when the trademarklaws fail to preserve a mark's integrity. °

The dismissal of Bi-Rite's trademark infringement and unfair com-petition claims illustrates the Second Circuit's continuing rejection of theexpansive Fifth Circuit view of trademark protection, a view articulatedin Boston Professional Hockey Association, Inc. v. Dallas Cap & EmblemManufacturing, Inc." The Fifth Circuit in Boston Hockey enjoined as atrademark violation the unauthorized manufacture and sale of embroi-dered cloth emblems bearing the trademarks of numerous professionalhockey teams. 2 The difference of opinion between the circuits empha-sizes the central focus of trademark and unfair competition law: the pro-tection of consumers from confusion in determining the source of goodsin the market. 3 This focus is statutorily embodied in Section 43(a) of theLanham Act. 4 Simply put, the Second Circuit view provides that amark, exploited for its own intrinsic value, and copied in nonconfusingways, and which does not confuse the consumer as to the source or originof the goods, will not be protected by the trademark law when its use isunauthorized. '"

In Boston Hockey, however, the Fifth Circuit, in what it called acase of "first impression,"' 6 extended trademark protection to "repro-

8. See Brinkley v. Casablancas, 80 A.D.2d 428, 438 N.Y.S.2d 1004 (1981) (although en-joining unauthorized distribution of a poster bearing model Christie Brinkley's photograph,New York courts refused to expressly recognize a common law right of publicity).

9. Bi-Rite, 555 F. Supp. at 1199.10. Ropski, The Right of Publicity: The Trend Towards Protecting a Celebrity's Celebrity,

72 TRADE-MARK REP. 251, 260 (1982); Heneghan & Wamsley, The Service Mark Alternativeto the Right of Publicity: Estate of Presley v. Russen, 14 PAC. L.J. 181 (1983).

11. 510 F.2d 1004 (5th Cir. 1975), cert. denied, 423 U.S. 868 (1975).12. Id. at 1008.13. Bi-Rite, 555 F. Supp. at 1193.14. The Lanham Act, 15 U.S.C. §§ 1063 et seq. (1976), sets forth the federal trademark

statutes. Section 1125(a), popularly referred to as § 43(a), functions primarily to protect con-sumers from confusion as to the source of goods in the marketplace. Bi-Rite, 555 F. Supp. at1193.

15. Bi-Rite, 555 F. Supp. at 1194.16. Boston Hockey, 510 F.2d at 1008.

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LOYOLA ENTERTAINMENT LAW JOURNAL

duction[s] of the trademark itself." 7 The court found the "confusion"requirement met by "[tihe certain knowledge of the buyer that the sourceand origin of the trademark symbols were in the plaintiffs." 8 In the viewof the Fifth Circuit, where a trademark is "the triggering mechanism forthe sale of the emblem," confusion need not be shown as to the source ofthe emblem's manufacture.19

Several subsequent decisions have similarly granted relief for the un-authorized use of marks on collateral products.2" Writing for the Bi-Ritecourt, Judge Sofaer commended the "fairness and commercial goodsense" motivating the extension efforts,2 1 but condemned the excess ofzeal which, in the court's view, distorted the meaning of the confusionrequirement. The Bi-Rite court reaffirmed the Second Circuit view thatany extension which would modify the meaning of the requirementshould be accomplished legislatively.22

One of the ramifications of the court's view is that when consumersdesire a mark for its intrinsic value and not as a designation of origin, theSecond Circuit will accord the mark no protection under unfair competi-tion laws.23 An evidentiary record, however, establishing that the use ofa functional mark caused consumer confusion as to source would supplya basis for Lanham Act protection.24 Since the performers and Bi-Ritehad failed to prove such confusion, or even to attempt proof, such asshowing sales by Button Master at concerts where the mark's owner per-formed, the court found that Button Master would be entitled to sum-mary judgment if Bi-Rite's failure remained unrectified. 25

The court dispensed with Bi-Rite's dilution claim, brought underNew York's general business statutes, even more quickly.26 Although byits own terms, Section 368-d of the New York General Business Law

17. Id.18. Id. at 1012.19. Id.20. Bi-Rite, 555 F. Supp. at 1194 (citing Winterland Concession Co. v. Sileo, 528 F. Supp.

1201, 1214 (N.D. Ill. 1981); Joel v. Various John Does, 499 F. Supp. 791, 792 (E.D. Wis.1980).

21. Bi-Rite, 555 F. Supp. at 1194.22. Id. at 1195, quoting Judge Knapp's response to Boston Hockey: "We do not believe

our Circuit would agree that such an extension of heretofore accepted concepts should. . . beaccomplished by judicial, rather than legislative fiat." Warner Bros., Inc. v. Gay Toys, Inc.,513 F. Supp. 1066, 1070 (S.D.N.Y.), rev'd on other grounds, 658 F.2d 76 (2d Cir. 1981), onremand, 553 F. Supp. 1018 (S.D.N.Y.), al'd, 724 F.2d 327 (2d Cir. 1983).

23. Bi-Rite, 555 F. Supp. at 1195; Ives Laboratories, Inc. v. Darby Drug Co., 601 F.2d631, 643 (2d Cir. 1979).

24. Bi-Rite, 555 F. Supp. at 1195-96.25. Id.26. Id. at 1196 (citing N.Y. GEN. Bus. LAW § 368-d (McKinney 1984)).

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1985] MUSIC

does not require public confusion, it does require a likelihood of injury tobusiness reputation, or dilution of the distinctive quality of a mark.27

According to the court, not only did the performers not suffer any injury,but their marks were actually strengthened by the unauthorized use. Thecourt reasoned that fans of the performers were given "an opportunity toannounce their allegiance to the groups, thereby publicizing the popular-ity of the groups."28 This rationale is reminiscent of the view espoused bythose courts which deny relief for appropriation of personality by charac-terizing any complaint as an ungrateful desire to be paid for the "compli-ment" of free publicity.29

The only claims remaining to be settled charged violations of therights of privacy and publicity.30 The right of privacy is often viewed asa "personal" interest prior to its commercial exploitation by its owner orhis designee, 3 and a violation of the right has been seen as an emotionalinjury alone.32 The right is protected by statute in New York,3 3 Tennes-see34 and California, 35 and by common law in many other states.36 TheBi-Rite court held that the performers had waived their right to claimintrusions into their common law privacy rights, since their names andlikenesses were already in the public domain.37

27. Id. Section 368-d provides that:Likelihood of injury to business reputation or of dilution of the distinctive quality ofa mark or trade name shall be a ground for injunctive relief in cases of infringementof a mark registered or not registered or in cases of unfair competition, notwith-standing the absence of competition between the parties or the absence of confusionas to the source of goods or services.

N.Y. GEN. Bus. LAW. § 368-d (McKinney 1984).28. Bi-Rite, 555 F. Supp. at 1196.29. See, e.g., Cepeda v. Swift & Co., 415 F.2d 1205 (8th Cir. 1969), in which baseball

player Orlando Cepeda licensed his name to Wilson Sporting Goods for use on baseballs. Wil-son later made a deal with meat packer Swift to promote Swift's hot dogs with giveaways ofthe Cepeda signature ball. Cepeda objected, unsuccessfully, to this contractually uncontem-plated use.

30. Bi-Rite, 555 F. Supp. at 1197.31. Saret & Stem, Publicity and Privacy-Distinct Interests on the Misappropriation Con-

tinuum, 12 Loy. U. CHi. L.J. 675 (1981).32. See, e.g., Grant v. Esquire, Inc., 367 F. Supp. 876 (S.D.N.Y. 1973) (actor Cary Grant

sued magazine for unauthorized use of his photo in a fashion feature; complaint did not fallinto traditional categories of privacy protection).

33. N.Y. Civ. RIGHTS LAW §§ 50, 51 (McKinney 1976 & Supp. 1983-84).34. TENN. CODE ANN. §§ 47-25-1101 et seq. (1984). These statutes, passed in the 1984

legislative session, protect "personal rights," Tennessee's equivalent to privacy and publicityrights.

35. CAL. CIV. CODE §§ 3344, 990 (West Supp. 1985).36. Bi-Rite, 555 F. Supp. at 1197. Some of the performers resided in, or otherwise had

their interests protected by the laws of Illinois and Georgia. Both states are among thosewhich recognize a common law right of privacy.

37. Id. at 1198.

LOYOLA ENTERTAINMENT LAW JOURNAL

The common law recognizes four independent torts arising from vi-olations of the privacy right. One of these, appropriation of the plaintiff'sname or likeness for the defendant's advantage, 38 has evolved into theright of publicity tort. It was this tort which finally provided grounds forthe court to offer the performers some relief.39

The court cited a recently outlined three-part test for establishing aright of publicity' violation based on a showing that: (1) a name orlikeness has publicity value; (2) it has been commercially exploited by itsowner; and (3) it has been subsequently appropriated by another for ad-vertising or trade purposes without the owner's consent. 41 In Bi-Rite, thecourt found the test was satisfied, deciding that the performers' nameshad financial value, as recognized expressly by the exploitation of theirmarks by their authorized licensee Bi-Rite.42 Moreover, Button Masterand its fellow defendants admitted their unauthorized appropriation.43

Since the performers had satisfied the test, the court needed only todetermine which of them could recover for the violation. Neil Youngand Pat Benatar, as individuals, were entitled to summary judgment; thegroup performers were similarly entitled.' The groups were found tohave a "persona": a public image that imbues their name, likeness ormark with commercial value marketable to those who seek identificationwith the image. Consequently, the court found they should be treatedthe same as single performers with an equally marketable persona.45

The recognition of a group's right to publicity was established inWinterland Concessions Co. v. Sileo,46 but Bi-Rite represents the firstadoption of the rule by any circuit court.47 The court also allowed Bi-Rite, as the exclusive licensee of several groups, to assert a publicityclaim, since it had a right to protect its interests against all who would

38. RESTATEMENT (SECOND) OF TORTS § 652A (1977); W. PROSSER, THE LAW OFTORTS § 117 (4th ed. 1971). The other three torts are: (1) unreasonable intrusion upon theseclusion of another; (2) unreasonble publicity given to the other's private life; and (3) public-ity that unreasonably places the other in a false light before the public.

39. Bi-Rite, 555 F. Supp. at 1198.40. Lerman v. Chuckleberry Productions, Inc., 521 F. Supp. 228 (S.D.N.Y. 1981) (quoting

Hicks v. Casablanca Records, 464 F. Supp. 426, 429 (S.D.N.Y. 1978)).41. Lerman, 521 F. Supp. at 232.42. Bi-Rite, 555 F. Supp. at 1199.43. Id.44. Id.

45. Id.46. 528 F. Supp. 1201, 1213 (N.D. Ill. 1981), affid inpart, rev'd in part, 735 F.2d 257 (7th

Cir. 1984).47. Bi-Rite, 555 F. Supp. at 1199.

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encroach on the exclusive rights embodied in the licenses.48 Thosegroups or individuals who had not exclusively licensed Bi-Rite, however,would have to sue on their own behalf.4 9 Furthermore, the court indi-cated that a non-exclusive licensee would not have standing to assertpublicity rights. 50

Until other performers, or their exclusive licensees, assert their ownright of publicity claim, Button Master, its co-defendants, Bi-Rite andany other manufacturer or distributor can freely exploit names, like-nesses or marks.5" The court considered that there may be good reasonfor performers to choose not to complain about such unauthorized use,and the court refused to prohibit the market from taking advantage ofthat choice.5 2

It is gratifying that the performers in Bi-Rite were able to obtainrelief for the unauthorized use of their marks under a right of publicityclaim. The Second Circuit's refusal, however, to recognize trademarkinfringement and unfair competition claims as being valid is disconcert-ing, given the realities of the present-day market. The growing phenome-non of "fad" merchandising, and the popularity of marks marketed fortheir own intrinsic value, present a problem which needs to be ad-dressed.5" With the increasing exploitation of a trademark's persona, theprotections which the Second Circuit believes are offered by the LanhamAct seem increasingly illusory. Courts should recognize the trademarkpersona, and provide it trademark and unfair competition protection tothe same degree as that now provided by publicity right protection toindividuals and groups who show injury to their publicity interests.5 4

It is only with federal unfair competition protection that similarly-situated plaintiffs in different circuits may receive even-handed treatmentwhen their names, likenesses and marks are appropriated for commercialadvantage by those who would steal what they would not buy. Let thosewho profit unjustly from the creative efforts and energy of the artistic

48. Id. at 1199-1200. See also Note, Transfer of the Right of Publicity: Dracula's Progenyand Privacy's Stepchild, 22 U.C.L.A. L. REV. 1103, 1117, 1120 n.80 (1975).

49. Bi-Rite, 555 F. Supp. at 1200.50. Id.51. Id. at 1201.52. Id. at 1200-01.53. See Winner, Right of Identity: Right of Publicity and Protection for a Trademark's

"Persona," 71 TRADE-MARK REP. 193 (1981).54. Id.

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community and its licensees begin to share its burdens as well as itsrewards.

Richard M. Cleary